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Building the right IP for your business

Materials of the MERLIN ( workshop on IP. MERLIN will support market-oriented researchers, SMEs and startups across Europe, to consider the full potential of their research and to shape ideas and outputs into innovations to be ready for market validation and commercialisation, by using modern needs-first, market-led methodologies and offering free training workshops and meetup in 7 European countries.
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Building the right IP for your business

  1. 1. H2020 GA #780460 Trainers Locations Date Helping today’s researchers create tomorrow’s enterprises This project has received funding from the European Union’s Horizon 2020 research and innovation programme under grant agreement No 780460 Workshop 8- Building the right IP for your business
  2. 2. H2020 GA #780460 Agenda 2 Introductions to MERLIN project and each other Ice breaker How to work within local and university regulations Conclusions and info on next events Spin off /Start up - what’s the difference? Creating sustainable commercial partnerships Intellectual Property – different types Intellectual Property exercise
  3. 3. H2020 GA #780460 Learning objectives 3 Understand the key differences between operating a spin-off and a start-up Understand how to work within local and university regulations to launch a spin-out Creating sustainable commercial partnerships Dealing with IP issues such as patents and trademarks and licensing
  4. 4. H2020 GA #780460 Workshop Guidelines  No question is a silly question 4  What is said in the room stays in the room  Support and challenge each other
  5. 5. H2020 GA #780460 General information  Housekeeping 5  Coffee break  Slide availability
  6. 6. H2020 GA #780460 MERLIN partners 6 3 Incubators Universidad Politécnica de Cartagena St John’s Innovation Centre Poznan Science and Technology Park 2 Consultancy Companies BluSpecs CIVITTA
  7. 7. H2020 GA #780460 About MERLIN project 7 MERLIN project aims to stimulate the interest in the creation of startups, spin-offs, patents and licensing agreements among ICT researchers, providing them with the business skills that would help them to commercialize their research findings and successfully introduce them to the market, and introducing them to their local and European entrepreneurial ecosystems Organization of more than 40 practical thematic workshops in several European cities, including Cambridge, Madrid, Poznan, Vilnius, Berlin, Warsaw, Bucharest, Tallinn Participation in 5 international conferences, organizing workshops and forums Organization of 8 meetups with potential customers, commercial partners, and investors Preparation of 4 webinars on SME growth and PPP business models
  8. 8. H2020 GA #780460 Icebreaker The Question Game 8 ?
  9. 9. H2020 GA #780460 Difference between Start-Up vs Spin-Off? 9
  10. 10. H2020 GA #780460 What is a Start-Up? A start-up is a newly emerged business venture that aims to meet a marketplace need, want or problem by developing a viable business model around products, services, processes or platforms. 10
  11. 11. H2020 GA #780460 What is a Spin-Off A spin-off company can be defined as a new, small, company formed to exploit IP developed during the course of an individual's employment in a larger organisation (e.g. a university). 11
  12. 12. H2020 GA #780460 12 All spin-offs are start-ups but not all start-ups are spin-offs
  13. 13. H2020 GA #780460 What’s the difference? Exercise (15 mins) 13
  14. 14. H2020 GA #780460 Compare and contrast (1) Spin-off o Origin – takes place within the academic/research institution o University IP ownership stake o University is a shareholder - shared equity arrangements o Impact – may be social as well as financial Start-up o Origin – outside the academic/research institution o IP is self-owned for company benefit o Owned by founders o Shareholder agreement between founders. Equity agreed by founders and negotiated with any investors 14
  15. 15. H2020 GA #780460 Compare and contrast (2) Spin-off o May allow flexible roles o University contribution to IP costs o Support with initial costs and introductions to investors (sometimes!) o Ongoing support with commercialisation – access to specialists i.e. IP, legal o Access to facilities – lab space plus technical input o Access to University support programmes e.g. iCure in UK o May find potential commercial partners Start-up o Likely to be full time in the business o IP and initial costs usually self financed or via fundraising -friends and family, grants, investment o Need to find ongoing support and ensure sufficient resources to cover costs o Need to find own premises and source specialist equipment o Need to source own commercial partners and any ongoing support requirements 15
  16. 16. H2020 GA #780460 Compare and contrast (3) 16 Spin-off o Process of agreeing Spin off with parent may be lengthy, bureaucratic and lacking in flexibility o Possible obligation to include university employees in team o Exit- University will be looking for a planned exit within agreed timescales. Often seeking early returns o You might not get the terms you want Start-up o Can progress more quickly without bureaucracy/decision making by others outside the business o Founders choose and build the team o Exit is at the discretion of the founders and any investors o The Board is in control
  17. 17. H2020 GA #780460 Start-up: A possible journey 17 Idea to solve a problem Competitor analysis/ market and IP research Build MVP Trial product and verify Commercialisation Plan Marketing and Customer acquisition Company legal structure and IP strategy FundingBuild a team
  18. 18. H2020 GA #780460 Spin-off: A possible journey 18 R&D/research project results with potential to commercialise University personnel agreed Shareholder agreement Technology Licensing arrangements agreed Commercialisat ion plan Final approval of terms and completion Raising investment/ finance Initial discussion with University University permission and ownership arrangements IP ownership agreed with University
  19. 19. H2020 GA #780460 Spin-off case study: Ziylo
  20. 20. H2020 GA #780460 Start Up Case Study – Raspberry Pi 20
  21. 21. H2020 GA #780460 Intellectual Property- IP 21
  22. 22. H2020 GA #780460 IP - is it really necessary? Yes! Why? What is IP? Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce* You do not need IP to commercialise products • IP is not a right to practice an invention • Obtaining IP will not guarantee commercial success But…IP can be: • A weapon or bargaining tool • A source of revenue 22© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. *(Source: World Intellectual Property Office (WIPO))
  23. 23. H2020 GA #780460 IP – is it worth it? Often cited figure: IP can constitute up to 80% of a company’s value o Coca-Cola - Brand worth $80.31 billion in 2016 o Black and Decker Workmate – independent inventor patented product – licensed on over 30 million units worldwide o Ketchup bottle valve (patented) – company sold for $13 million in 1995 o iPhone (design) – nearly $400 million in damages against Samsung (now under review) 23© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  24. 24. H2020 GA #780460 Different IP rights 24 Improvements to products or processes Inventions Concepts Applications for new discoveries Product appearance Graphics Packaging PatentsCopyright Designs Dance & mime LiteratureMusic Films Photographs Trade names Get-up Slogans Goodwill Trade marks Products Other Trade secrets Reputation Know-how Inside knowledge © 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  25. 25. H2020 GA #780460 Unregistered IP 25© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  26. 26. H2020 GA #780460 Registered IP 26© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  27. 27. H2020 GA #780460 Copyright – what does it protect?  Books, technical reports, manuals, databases  Engineering, technical or architectural plans  Paintings, sculptures, photographs  Music, songs, plays, dramatic works  Promotional literature, advertising  Films, videos, cable or radio broadcasts  Computer software 27
  28. 28. H2020 GA #780460 28 • Usually the first creator or author... …or their employer if produced in the ordinary course of their employment • However, a contractor will retain ownership unless their contract is explicit to the contrary • Even if the creator sells their rights, they have ‘moral rights’ over how their work is used Who owns the copyright?!
  29. 29. H2020 GA #780460  Any sign which is capable of being represented graphically  Any sign which is capable of distinguishing the goods or services of one undertaking from another A Badge of Origin Trademarks 29 TM
  30. 30. H2020 GA #780460 Benefits of registering a trade mark 30 Protects your brand value Builds an asset Defends against rival marks Defines your rights Prevents counterfeiting and fraud
  31. 31. H2020 GA #780460 Trademarks (2)  Name  Logo  Domain Name  What can be registered?  Slogan 31  Colour theme  Shape theme  Music  Smell!
  32. 32. H2020 GA #780460 Unacceptable Trademarks 32 • They have become customary in your line of trade • describe your goods or services or any characteristics of them • are not distinctive • are offensive • are against the law • are deceptive Marks will not be accepted if;
  33. 33. H2020 GA #780460 How to register a Trademark International registration via WIPO 33 EU-wide protection (all EU Member States) via EU IPO National level, via national EU IP offices Regional level registration in Belgium, the Netherlands and/or Luxembourg, via BOIP. Benelux Office of International Property
  34. 34. H2020 GA #780460 Registered Designs Protects shape or configuration ( ) and/or pattern or ornamentation (2-D) No protection for function, materials or technology of manufacture No protection when form is dictated by function (ie: no design freedom) 34
  35. 35. H2020 GA #780460 How to register a Design 35 Doing business in one country only Register design with that country gives exclusive rights but won’t be able to prevent anyone from copying in other EU countries …consider a Registered Community design (RCD) Do business in more than one country
  36. 36. H2020 GA #780460 Searches for existing IP 36
  37. 37. H2020 GA #780460 Patents • Product, process, apparatus • how things work • what they do • how they do it • what they are made of • how they are made 37© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. Most patents are for incremental improvements in known technology – evolution rather than revolution • The invention must be new, inventive and industrially applicable • First English patent granted by Henry VI in 1449 - method of making stained glass. Protection for a technical invention:
  38. 38. H2020 GA #780460 Example Patent Claim – Quiz 1 Which stationary item is covered by the following claim: A sheet metal binder clip having extremities maintained in juxtaposition by the resiliency of the metal, handle receiving and operating jaws formed at said extremities and comprising separated, oppositely disposed duplex cam surfaces and handles having opposite ends journaled in said jaws and operating against said cam surfaces. 38© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  39. 39. H2020 GA #780460 What is a Patent? Quiz 1 - Answer US1,139,627 39© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  40. 40. H2020 GA #780460 Example Patent Claim – Quiz 2 1. A system for engaging shoes with a hitch means to permit a person standing on a stage surface to lean forwardly beyond his or her center of gravity, comprising: at least one shoe having a heel with a first engagement means, said first engagement means comprising a recess formed in a heel of said shoe covered with a heel slot plane located at a bottom region of said heel, said heel slot plate having a slot formed therein with a relatively wide opening at a leading edge of said heel and a narrower terminal end rearward of said leading edge, said recess being larger in size above said terminal end of said slot than is said terminal end of said slot; and a second engagement means, detachably engageable with said first engagement means, comprising a hitch member having an enlarged head portion connected by a narrower shank portion to a means for raising and lowering said head of said hitch member above and substantially level with or below said stage surface, said head portion being larger in size than said terminal end of said slot and said shank portion being narrower than said terminal end of said slot, wherein said hitch member can be moved through apertures in said stage surface between a projecting position raised above said stage surface and a retracted position at or below the stage surface, and when said head portion of said hitch member is raised above said stage surface, said first engagement means can be detachably engaged with said projecting hitch member, thereby allowing a person wearing the shoes to lean forwardly with his or her normal center of gravity beyond a front region of said shoes, and maintain said forward lean. 40© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  41. 41. H2020 GA #780460 What is a Patent? Quiz 2 - Answer 41© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  42. 42. H2020 GA #780460 How to spot an opportunity 42 Is the feature new? Is the feature inventive? Would a patent be valuable? Better than secrecy? Reasonable product life? Costs justifiable? File Application Do not file a patent application No No No No No No Yes or maybe Yes or maybe Yes or maybe Yes or maybe Yes or maybe Yes or maybe © 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  43. 43. H2020 GA #780460 Working with university and other regulations Creating sustainable commercial partnerships 44
  44. 44. H2020 GA #780460 Working within local and University regulations What does your contract with the University say? Who owns the IP? What does the University’s IP policy say? Involve the Technology Transfer Office from the start Take your own legal advice if you think the University doesn’t own the IP before walking off with it 45© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  45. 45. H2020 GA #780460 You’ve got your IP in good order, so what could go wrong? 46
  46. 46. H2020 GA #780460 Lots of things, actually 47© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. • IP Ownership • Commercial • Administrative • Regulatory • Personal • Contractual What could go wrong?!
  47. 47. H2020 GA #780460 Do you have the right people? o Do they get on with each other? Do they get on with outsiders? o Are they experienced? Is their experience the right kind? o Do you need mentors? o Is anyone missing? o Experienced CEO o Marketing person from the right sector Remember, needn't be employed full-time o Is anyone superfluous? o The CEO's best mate o The PhD supervisor who didn't actually do anything 48© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  48. 48. H2020 GA #780460 The technology is oh, so, fascinating BUT: o Is it already out there? o Would anyone want it anyway? o Might someone beat you to it? o Might it just bomb even if it's good? o Are you the ones who should be selling it anyway? Do you need: 49© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. New Staff? Agents? Distributors
  49. 49. H2020 GA #780460 Good Housekeeping Keep up to date records of: o Inventions o IP portfolio o Know-how o Contracts 50© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. o Confidential information disclosed and received o Excel spreadsheets with summaries are a good idea o Diarise key dates
  50. 50. H2020 GA #780460 Know the regulatory and legal framework 51© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. Do you need insurance? • Company law • Directors’ duties • Data protection • Freedom of information • Trading and advertising standards Generally; • Industry Standards • GCP • GLP • GMP • Patent consent and confidentiality For your sector;
  51. 51. H2020 GA #780460 You will be entering into contracts such as: o IP assignments and licences in o Confidentiality agreements o Materials transfer agreements o Employment and director's service agreements o Consultancy agreements o R&D Collaborations o Licences out o Agency and distribution agreements o Standard terms of purchase and supply 52© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  52. 52. H2020 GA #780460 Contracts – Common pitfalls o There is no contract o It's written on the back of a fag packet o It makes no sense or is vaguely drafted o It bears no relation to reality o Not all stakeholders know about it o It is hideously one-sided o It contains illegal or unenforceable provisions o It is subject to foreign law and jurisdiction 53© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
  53. 53. H2020 GA #780460 Why you may not actually own “your” IP • Inventors never assigned rights into company • Consultant still owns IP • Inadequate wording - "X will assign to Y" 54© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. • Co-owners you didn't know about • Other parties with rights e.g. grantors
  54. 54. H2020 GA #780460 Dealing with big companies? What are the Pros and Cons? 5 mins in small groups 55
  55. 55. H2020 GA #780460 Pros and cons of dealing with big companies? 56 Pros Experience Competitive advantage Transition to scaling company Stronger supply chain Better leverage of resources Distribution routes Increased revenue Cons Decision making can be slow Pricing Payments may be slow Can de dropped without warning Over reliance on one company
  56. 56. H2020 GA #780460 Marks & Clerk LLP 57© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark. Simon Portman | Managing Associate Solicitor (UK) Marks & Clerk Solicitors LLP D +44 1223 345521 | F +44 20 7420 0255 | 62-68 Hills Road, Cambridge CB2 1LA, UK Dr. Esther Ford | Partner Registered (UK) and European Patent Attorney for Marks & Clerk LLP D +44 1223 345526 | F +44 1223 365560 | 62-68 Hills Road, Cambridge CB2 1LA, UK Marks & Clerk has long been recognised as one of the leading patent and trade mark attorney firms across the globe, with eight offices across the UK and a further nine in North America and the Asia-Pacific. We are committed to providing exceptional intellectual property advice around the world, helping you to navigate the complexities of IP, patents, trade marks and design protection. Innovation is the life-blood of business and it’s vital that you do not overlook the need to protect your intellectual property. From the capture of an idea, to the enforcement or defence of rights in disputes Marks & Clerk is your expert partner to ensure your IP is protected and fully exploited. Today’s local is tomorrow’s global – and with our diverse team of practitioners, you’re always supported by a network of experts.
  57. 57. H2020 GA #780460 Guest Speaker - Corrosion Radar 58
  58. 58. H2020 GA #780460 Guest Speaker - Camnexus 59
  59. 59. H2020 GA #780460 Round-Table Q&A 60 Spin Out company Start-Up Company IP Lawyer Tech Transfer Officer Facilitator
  60. 60. H2020 GA #780460 If you want to go deeper 61 Useful Links Intellectual Property Office for Europe - World Intellectual Property Organisation Design View Centralized access point to view the registered design information held by any of the participating National Offices, - Find a registered design in UK Search trademarks, designs, owners in the EU - Trademark database plus details for national offices Applying for a European patent patents/technical/espacenet.html#tab-1 Patent search tool
  61. 61. H2020 GA #780460 Information about next workshops in XYZ 62
  62. 62. H2020 GA #780460 63 Supplementary slides for further depth if needed.